Tag Archives: Brand Management and Branding

“Private Label Store Brand OTC Naming Architecture”!

Originally posted 2009-11-17 12:57:31. Republished by Blog Post Promoter

Now that’s a mouthful, eh?  Yes, that is one ba-a-a-ad phrase to have handy for your next trademarks-and-branding over pigs-in-blankets soirée!

Oh… you don’t… know what private label store branding OTC architecture means?  (Cough.)  Excuse me, um, I think I just saw my friend come in — hey, look, they brought out new canapés! — catch you later, okay?

Duets Blog logoYeah.  I just read itfor the first time, too,  via this (warning:  Multilayered social networking ahead) LinkedIn discussion in the International Trademark Association group, where I wasn’t the only dummy who had never heard of it — but now I’m glad I did!  It’s explained in this post at The Duets Blog which actually deals with one of my favorite topics, “store brands” or private labels.

Well, I always wanted to know more about the issues involved in private branding, which bring out the best in me — and now I do!  Plus I know that very cool sounding phrase . . .  whatchamacallit.Mark Prus

Great post by Mark Prus of naming consultant NameFlash.

Wal-Mart pushed back on dubious trademark threats

Originally posted 2006-03-08 13:33:28. Republished by Blog Post Promoter

MarketWatch reports this story about an opinonated gent who’s suing Wal-Mart for a declaratory judgment:

Smith said he was making a point by comparing the giant retail company to the Nazis by creating T-shirt designs that played off the Bentonville, Ark., firm’s familiar logo, including “I (heart) WAL*OCAUST. They have family values and their alcohol, tobacco and firearms are 20% off,” the newspaper reported.

Wal-Mart launched a legal battle by writing a cease-and-desist demand that led Smith to file suit Monday in federal court in Atlanta. Former presidential hopeful Ralph Nader’s legal aid group, Public Citizen, is helping Smith, the report said.

Smith should be ashamed of himself for comparing a damned variety store to the Third Reich. It demonstrates a real lack of moral judgment on his part.

But the stupid party here is Wal-Mart, which should get its clock cleaned and which has given a platform for publicity to a bitter, if morally blind, adversary. Whether it will in this trademark-owners-take-all environnment is, however, anyone’s guess.

UPDATE: Hm. Maybe Wal-Mart had it coming?

UPDATE: The Pierce IP News Blog has it that Wal-Mart will claim its trademark is being besmirched by Smith. In other words, its claim will probably hinge on a trademark dilution count. You know, dilution — the infringement that never has to say “I’m confused.”

M-I-C . . . see you in court!

Originally posted 2008-09-03 11:51:57. Republished by Blog Post Promoter

Could there be a mouse hole in Mickey’s larder?  The Los Angeles Times reports:

All signs pointed to a Hollywood ending with Disney and Mickey Mouse living happily ever after – at least until a grumpy former employee looked closely at fine print long forgotten in company archives. . . .

Copyright questions apply to an older incarnation, a rendition of Mickey still recognizable but slightly different. Original Mickey, the star of the first synchronized sound cartoon, “Steamboat Willie,” and other early classics, had longer arms, smaller ears and a more pointy nose. . .

The issue has been chewed over by law students as class projects and debated by professors. It produced one little-noticed law review article: A 23-page essay in a 2003 University of Virginia legal journal argued that “there are no grounds in copyright law for protecting” the Mickey of those early films.

Garsh, Mick!

Roger Schechter, a George Washington University expert on copyright, called the article’s argument “a plausible, solid, careful case.”  By contrast, a Disney lawyer once threatened the author with legal action for “slander of title” under California law. No suit was filed.

SUPER HERO® my foot

Originally posted 2006-03-27 16:08:22. Republished by Blog Post Promoter

UPDATE: Our NPR interview on this topic was on NPR’s “All Things Considered” just before 6 tonight.

We blogged on this topic last week. Today the LA Times weighs in, writing, confusingly:

TICKETS TO THE California Science Center’s latest exhibit, “Marvel Super Heroes Science Exhibition,” sell for $6.75 and up. But there’s one lesson the exhibition offers free of charge to anyone who wanders by the museum, and it’s not about science.

The lesson is in the giant sign looming over the center’s entrance archway: “Marvel ® Super Heroes(TM) Science Exhibition.” The “TM” stands for trademark, signifying that Marvel is claiming exclusive rights to use the term “super hero” as a marketing term for, well, superheroes. The company and its largest competitor, DC Comics, jointly obtained the trademark from the federal Patent and Trademark Office in 1981.

The government’s action means that any company wishing to market a comic book, graphic novel or related item with any variation of “super hero” in the name or title must get permission from Marvel and DC. Dan Taylor, the Costa Mesa-based creator of the “Super Hero Happy Hour” comic, learned about this absurdity two years ago when he was contacted by lawyers for Marvel and DC, prompting him to rename his series to the more pedestrian “Hero Happy Hour.”

What government action? What happened in 1981? (See below — someone else found the answer.) Nor does a claim of a valid registration make any sense in light of the claim in the editorial that the sign says:

Marvel ® Super Heroes(TM) Science Exhibition

If SUPER HEROES were a bona fide registered mark, it should say “Marvel ® Super Heroes ®,” not “Super Heroes(TM).” “TM” signifies the assertion of common-law trademark rights — not a registered mark and, as a practical matter, that a mark was either refused registration or that legal counsel advised against seeking registration (because the refusal would harm a future common law claim).The editorial argues that SUPER HEROES is a generic term not entitled to any trademark protection, which is correct. Genericness is the only way to defend against a registered and incontestible trademark, which presumably one registered in 1981 would be.

Even if it were true that two competing companies could own a trademark jointly in an area where they compete — thereby violating the axiom that trademarks indicate a single source of a good or service with which they are used — they seem to be succesfully avoiding the issue of their absurd joint registration, even as their giant signs claim only a “TM” common-law mark.

I guess that’s some super-heroic PR / legal spin job by the comic book fiends, but why journalists aren’t “getting this” — or why I [couldn’t] for the life of me find the source that does indicate a registration — leaves me pretty confused at the very unlikelihood of it all.

UPDATE: Attorney Robert J. Sinnema points me to registration number 1179067:

SUPER HEROES (“PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM [(( ; CARDBOARD STAND-UP FIGURES; PLAYING CARDS; PAPER IRON-ON TRANSFER; ERASERS; PENCIL SHARPENERS; PENCILS; GLUE FOR OFFICE AND HOME USE, SUCH AS IS SOLD AS STATIONERY SUPPLY;] NOTEBOOKS AND STAMP ALBUMS )).

He adds:

If you look at the owner/assignment information it appears to show joint ownership between DC and Marvel. (I’m with you, though–I don’t know how the mark can be a valid indicator of source.)

And why the plural? Believe me, there’s a reason for everything, including the companies’ continued non-use of the ®. They simply don’t want to draw attention to preposterous joint ownership (again — by competitors!) of the registration of a generic term. Ah, but utilizing the joint assignment — when a joint application would never have passed muster — is diabolically clever. It’s still not an enforceable trademark, however — registration, assignment or not.

UPDATE: Via (and according to) aTypical Joe, I have discovered my inner (trademark – protected) self! Read More…

Some intel on INTEL®

Originally posted 2010-04-07 03:15:14. Republished by Blog Post Promoter

CIA Headquarters - intel inside

There's intel inside.

BUMPED from January 1, 2010 and UPDATED due to decision (scroll to the bottom for the stunning conclusion):

Had you heard about this one from Mike Masnick?

Chip giant Intel has a bit of a reputation for being a trademark bully at times, threatening or suing many companies just for having “intel” in their name somewhere — including a travel agency and a jeans company. Now, before anyone brings it up, yes, as a trademark holder the law requires you to enforce your trademark against infringement, lest it become considered “generic” (such as xerox machines, kleenex tissues, aspirin and other brand names that became generic).  But, the key in all of those generic situations was that the use was applied to things that directly competed with the original brand’s products. People referred to other tissues as “kleenex” and it stuck. Intel’s lawyers seem to go out of their way to find potential infringement where there obviously is none at all.

Paul Alan Levy alerts us to the latest such case, where Intel has sued the operators of the Mexico Watch newsletter, because its domain is LatinIntel.com. Of course, the reason for that is that it is using the commonly accepted abbreviation of “intel” as short for “intelligence.” It’s common shorthand, especially within government circles, to refer to gathered intelligence as simply “intel.” . . .

More importantly, no one is going to look at LatinIntel.com and confuse it for the world’s largest computer chip maker. No one is going to look at that site and wonder how come they can’t order a Centrino processor. There’s simply no confusion at all. . . .

Well, when I first read that post, I thought Mike may just be on to something there. Here’s how I see it now:

UPDATE:  Intel loses (don’t get excited about the “decision” itself however!)

Yay us!

Glory and gratitude to my co-counsel Colby Springer who nailed it at oral argument.

MORE:  Is less.

Where you stand depends on where you sit

Originally posted 2009-12-28 09:00:50. Republished by Blog Post Promoter

I’ve never had a guest post in response to a LIKELIHOOD OF CONFUSION® item before, but that’s only because no one with the stature to respond to something I’ve written here based on personal knowledge of the facts has ever had the nerve to ask for one — not until I entered the rock and roll world of the fascinating Ritchie Fliegler, that is.  Ritchie’s a marketing guy, not a lawyer, so, naturally, he’s not afraid to speak truth to, uh, whatever it is this thing we have here is.Here’s what I would love to be able to say is the first of many replies to a LOC blog post from someone with a different point of view, and in a position to know. — RDC

 

“Where you stand depends on where you sit” – Nelson Mandela

This is one of my favorite quotes.  Not only does it ring true on so many levels, it’s also easier to understand than Einstein’s theory of relativity, which says basically the same thing —“Two events, simultaneous for some observer, may not be simultaneous for another observer if the observers are in relative motion.”

What does this have to do with trademark law? Not much actually, but it has a lot to do with a spirited and interesting conversation I had recently, with Ron.

Like many of you, my Google alerts are set to tick off on a number of subjects near and dear to me, classic cars, family members, former employers and the like. A few days ago the Google light went off alerting me to a blog post about a former employer, Fender Musical Instruments Corporation (FMIC) and their failed attempt to register trademarks for their famous guitar-body shapes – Strat, Tele and P-Bass. The article was well written, and thoughtful, however, in a vortex of relativity that would do ol’ Albert proud, my blood started to boil at what I perceived as purposeful errors and omissions by an uninformed outsider.

Now, I have been away from FMIC for well over two years, but I still have many dear friends at the place as well as a lingering vested interest… so I sprung in to action and sent a message with a requisite level of rancor. Read More…

Turning back that Crimson Tide

Originally posted 2009-11-03 13:50:30. Republished by Blog Post Promoter

Trademark law does not trump the right to make and sell artistic depictions of real life after all, it turns out.  Or even NCAA football.

Almost exactly four years ago I wrote about the suit by the University of Alabama urging the obnoxious claim that artistic depictions of its players at play were, by virtue of utilization of the familiar uniforms and colors of those players, infringements of the Alabama trademarks in its corporate sports machine.  Amazingly, the first judicial ruling in that case has just come out — and, blessedly, it gets it right (even if the Tuscaloosa News reporting of it is a little, er, sic):

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

UA attorneys had argued before Propst in a hearing two weeks ago that Moore’s paintings showed trade dress, which they said is any symbol associated with UA, including the crimson and white color scheme.UA sued Moore for trademark violations in March 2005, alleging that he painted scenes of Crimson Tide football games without permission from the university and reissued previously licensed prints without paying royalties. The university is seeking back pay [sic] for more than 20 paintings and wants Moore to license any future paintings. . . .

Propst knocks down nearly every claim made by UA attorneys against Moore, even writing that Moore did not violate previous licensing agreements with new or reissued paintings. At the center of the issue, Propst dismisses UA’s assertion that painting Crimson Tide football violates [sic] trademark because the uniforms and their colors are not protected.

Also, UA argued that Moore’s paintings were too realistic and did not transform the original scene enough to constitute artistic expression. However, Propst writes the reality of the painting is needed to relate the play and adds to the level of artistry.

Propst also writes there isn’t enough confusion among customers as to who sponsors the paintings. ‘It is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team,’ he wrote. ‘That, however, does not create any reasonable inference that they do so because of confusion based on the color of the uniforms.’

The whole opinion is here.

There will be no end to the greed or the attempt to utterly distort the entire purpose of trademark here — this will be appealed, it has been promised.  In the Eleventh Circuit (as everywhere else), “To show a likelihood of success on the merits for [either a] trademark and trade dress infringement, [a plaintiff] must show that consumers will likely confuse the [plaintiff’s] mark or dress with [the junior user’s product or service]. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress).”  So what’s the argument — the public will think that the paintings are the Crimson Tide’s latest run defense?

Of course, consumer confusion is never, ever seriously considered in naked rent-seeking cases such as these — Read More…

Locking it down

Originally posted 2008-07-10 00:01:41. Republished by Blog Post Promoter

Every lawyer who practices in the intellectual property area is asked frequently how to go about protecting a unique or creative idea that someone fears is at risk of being stolen by a prospective investor, partner or advisor to whom early disclosure is necessary. During the dot-com bubble, everyone walked around, it seemed, with an NDA (non-disclosure agreement) ready to be beamed from his Palm. Is an NDA still the answer?  This post is actually about trademark registrations — but let me briefly reiterate my views about NDA’s, and, as we say, “connect up” the two seemingly unrelated topics.

I usually have a couple of points to make in response to the NDA question:

  1. Most people to whom you are considering making disclosure are in the driver’s seat, and will not sign a non-disclosure agreement because doing so almost invites a claim if they end up getting involved in someone else’s similar project years later. Or they won’t sign just because you need them more than they need you.
  2. Your idea isn’t really all that hot. Successful new businesses owe far more to (a) entrepreneurs’ focus and dedication, (b) adequate capitalization, (c) great timing and (d) the grace of God (not in that order), than to having come up with truly original concepts.

Security or death

These and similar arguments are well developed in an article from a few years ago called “The Cult of the NDA,” written (I think) by a fellow named Peter Leppik, which article lawyer readers of this blog should bookmark.

Comes now an entertainment lawyer named Barry Neil Shrum who has written a pretty thoughtful piece on some approaches that actually might work. It’s worth taking a look at. But I must note disagreement with his advice about trademarks, which unfortunately will reinforce, unintentionally, a number of common misconceptions about trademarks that are “out there.” And that means it’s time again to try to set things straight.

Early on Barry presents a fair summary of what you need to get trademark protection, though more on his allusion to securing trademarks for “titles” below. He helpfully makes it clear that federal trademark registration is “tedious, complicated and costly,” but doesn’t explain why, or explicitly address the concept of the Intent to Use application, which seems central to his ultimate advice.

And that leads to my beef — the following recommendation that Barry puts first on his list of otherwise very good, otherwise endorsed-by-LIKELIHOOD OF CONFUSION® suggestions:

(1) First, trademark all slogans, titles or name, at the very least your state level, but preferably at the federal level;

Unfortunately, this suggestion is densely packed with problems because Barry has not elucidated some fundamental facts about trademarks. Read More…

Best of 2009: “Orange you glad you’re such mullahs?”

Originally posted 2009-12-26 22:48:55. Republished by Blog Post Promoter

This was first posted on April 29, 2009:

William Lozito at Name Wire writes about a counterfeiting double-cross, or is it triple-cross or something more?, that is so byzantine in its fruity dimensions that only the wretched Zionist Entity could have hatched it. So, what happens when Jew oranges infiltrate the Islamic Republic of Iran’s citrus bins, formerly believed impregnable against the Elders of Zion and their nefarious schemes?:

Fruity Jew

Fruity Jew

[T]he seemingly innocent appearance of “Jaffa Sweetie Israel-PO” oranges was enough to make one Iranian official declare that “rogue elements” were trying to “disgrace the ruling government.”

As it turns out, those “rogue elements” were unscrupulous Chinese middlemen, who illegally used the “Jaffa Sweetie” brand name on their counterfeit fruit.

The problem was exacerbated by the fact that “President Ahmadinejad inadvertently distributed the fruit during a two day goodwill visit to the town of Salam in southern Iran.”

The Chinese and Iranian investigators have counter-claimed that they actually bought the real thing in Israel and simply forgot to remove the stickers before sending them on to Iran. One then must wonder if it is the brand naming of the oranges or the oranges themselves that is the actual problem?

Jujyfruits

Jujyfruits

The Iranians claim they want no part of “Zionist” oranges, but if the Chinese investigators are correct, then they have been eating them via China, branded as Jaffa or something else, for some time.

Well this much is clear: Of all the wicked Jews controlling the world these days, it’s the Chinese ones who are the worst, you know?

Hat tip to Pamela Chestek, a known insidious fruit-handler herself.

Comments at the original post.

Best of 2013: Turning back that Crimson Tide

Originally posted 2009-11-03 13:50:30. Republished by Blog Post Promoter

Originally published January 8, 2013

Trademark law does not trump the right to make and sell artistic depictions of real life after all, it turns out.  Or even NCAA football.

Almost exactly four years ago I wrote about the suit by the University of Alabama urging the obnoxious claim that artistic depictions of its players at play were, by virtue of utilization of the familiar uniforms and colors of those players, infringements of the Alabama trademarks in its corporate sports machine.  Amazingly, the first judicial ruling in that case has just come out — and, blessedly, it gets it right (even if the Tuscaloosa News reporting of it is a little, er, sic):

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

UA attorneys had argued before Propst in a hearing two weeks ago that Moore’s paintings showed trade dress, which they said is any symbol associated with UA, including the crimson and white color scheme.UA sued Moore for trademark violations in March 2005, alleging that he painted scenes of Crimson Tide football games without permission from the university and reissued previously licensed prints without paying royalties. The university is seeking back pay [sic] for more than 20 paintings and wants Moore to license any future paintings. . . .

Propst knocks down nearly every claim made by UA attorneys against Moore, even writing that Moore did not violate previous licensing agreements with new or reissued paintings. At the center of the issue, Propst dismisses UA’s assertion that painting Crimson Tide football violates [sic] trademark because the uniforms and their colors are not protected.

Also, UA argued that Moore’s paintings were too realistic and did not transform the original scene enough to constitute artistic expression. However, Propst writes the reality of the painting is needed to relate the play and adds to the level of artistry.

Propst also writes there isn’t enough confusion among customers as to who sponsors the paintings. ‘It is likely that people who buy the Moore paintings do so, at least partially, because of their loyalty to the University of Alabama and its football team,’ he wrote. ‘That, however, does not create any reasonable inference that they do so because of confusion based on the color of the uniforms.’

The whole opinion is here.

There will be no end to the greed or the attempt to utterly distort the entire purpose of trademark here — this will be appealed, it has been promised.  In the Eleventh Circuit (as everywhere else), “To show a likelihood of success on the merits for [either a] trademark and trade dress infringement, [a plaintiff] must show that consumers will likely confuse the [plaintiff’s] mark or dress with [the junior user’s product or service]. See Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir. 1999) (trademark); Wal-Mart Stores, Inc., v. Samara Bros., Inc., 529 U.S. 205, 146 L. Ed. 2d 182, 120 S. Ct. 1339,1343 (2000) (trade dress).”  So what’s the argument — the public will think that the paintings are the Crimson Tide’s latest run defense?

Of course, consumer confusion is never, ever seriously considered in naked rent-seeking cases such as these — Read More…

Urban Smear

Originally posted 2006-01-03 12:39:59. Republished by Blog Post Promoter

We’ve blogged on graffiti before. Wordsmith to the stars Jane Genova reports on a little commercial free speech applied a bit too freely — as in, on other people’s walls:

Seems Sony contracted with local graffiti artists to plaster urban space in seven cities with caricatures of children playing with video toys. The ads don’t carry any product names or the Sony brand name. The strategy was to simulate street art to deliver a commercial message about the fun of video products.

What Sony might have considered edgy and out there the city of Philadelphia as well as anti-graffiti organizations, for instance, considered out of line and against the law. Sony had not applied for the mandatory licensing and zone approval. Unofficially signs are being defaced and there could be official fines and other legal action. In New York, street folks have covered over the Sony “ad” with stickers saying “Corporate vandals not welcome.”

What the heck, they’ve been vandalizing the music industry for this long, anyway — what’s a few placards at this point?

Revival of the dead

Originally posted 2008-07-31 15:36:01. Republished by Blog Post Promoter

Just this morning a client told me about this company, River West Brands, that finds ways to obtain some semblance of the “rights” in abandoned consumer-products trademarks and “revitalize them for modern relevance, reconstruct the business model for today’s marketplace, and ultimately return these brands to the consumer.”  So big of them!  (For another post about the “brand equity” gold to be mined in the consciousness of America’s most narcissistic generation, see this recent item.)

Pam Chestek took a long hard look at this on her blog, Property, Intangible, and focuses on litigation Cotton Mather -- Brand Builder in the PURITAN Linebetween Smuckers, the one-time owner of one of those brands, PURITAN for cooking oil.  River West, which had only filed an Intent to Use application, backed down.

Her analysis is well worth looking at, and she considers some of the questions this new “business model” raises in the context of what the think a trademark should be, and what perhaps it really is, in the 21st century:

If River West stays around long, it could generate some interesting new case law on trademark rights and abandonment.

And by trademark rights, Pamela surely means “trademark rights in gross” — the concept, rejected under classical U.S. trademark doctrine but insidiously becoming a fact of life, that there can be such a thing as trademark rights “in gross,” i.e., separated from the goods or services with which a mark is associated in the mind of the public.

It would seem that if we want to retain this fundamental feature of American trademark law, it is River West, and not (merely by some claim to ancient rights or pedigree) Smucker’s, that should — upon a proper finding of abandonment — be allowed the opportunity to “build” a new brand — on a framework of new use.  That’s true even if it does so on a foundation abandoned by others.

UPDATE:  John Welch reports on a TTAB case also implicating the concept of resurrection of “legacy” brands.